Michael Hill Franchise Pty Limited

Trademark Trial and Appeal Board

Feb 12, 2016

No. 86172969 (T.T.A.B. Feb. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: February 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Michael Hill Franchise Pty Limited
_____

Serial No. 86172969
_____

David A. Lowe of Lowe Graham Jones,
for Michael Hill Franchise Pty Limited.
Nicholas A. Coleman, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Shaw, Greenbaum and Adlin,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Michael Hill Franchise Pty Limited (“Applicant”) seeks registration on the
Principal Register of the mark for various jewelry, precious
stones, watches, and related accessories in International Class 14, and retail and
Serial No. 86172969
- 2 -
wholesale jewelry stores, jewelry distributorships, and ancillary services related to
the promotion and sale of jewelry in International Class 35.1
The most relevant goods and services are as follows:
Jewellery, including rings, necklaces, pendants, earrings,
charms, chains, bracelets, brooches and bangles; …
Personal ornaments of precious metal; Trinkets in the
nature of jewellery; Precious stones including diamonds,
opals, pearls and coloured stones; Goods, namely,
jewellery, rings, necklaces, pendants, earrings, charms,
chains, bracelets, brooches, bangles, baskets and cuff
links of precious metal alloy and coated with precious
metal; … Jewellery cases and caskets of precious metals;
… [and] Accessories, namely, … jewellery cases and
boxes, jewellery chains, [and] jewellery ring holders in
International Class 14, and
Retail and wholesale store services in the field of
jewellery, goods of precious metal and their alloys in the
nature of jewellery, rings, necklaces, pendants, earrings,
charms, chains, bracelets, brooches, bangles, and cuff
links, goods in precious metals or coated therewith in the
nature of jewellery, rings, necklaces, pendants, earrings,
charms, chains, bracelets, brooches, bangles, and
cufflinks, jewellery cases, jewellery caskets, rings,
necklaces, pendants, earrings, charms, chains, bracelets,
brooches, bangles, and cuff links … Distribution, namely,
distributorship services in the field of jewellery, goods of
precious metal and their alloys, goods in precious metals
or coated therewith, precious and semi-precious stones,
jewellery cases, jewellery caskets, … charms, bracelets,

1 Application Serial No. 86172969 was filed on January 23, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, and upon Sections 44(d) and 44(e) of the Trademark Act based upon
Applicant’s ownership of New Zealand Reg. No. 991131, which was filed and issued on
January 16, 2014. The words IDEAL CUT, PRINCESS and BRILLIANCE have been
disclaimed, and color is not claimed as a feature of the mark. In addition, the application
includes a claim of ownership of several U.S. registrations for MICHAEL HILL-formative
marks, and the following description of the mark: “[t]he mark consists of the term
‘MICHAEL HILL’ to the left of a starburst design, all above the terms ‘IDEALCUT’,
‘PRINCESS’ and ‘PERFECT BRILLIANCE’[,]” and the following statement: “‘MICHAEL
HILL’ identifies a living individual whose consent is of record.”
Serial No. 86172969
- 3 -
necklaces, chains, rings, trinkets in International Class
35.
The Trademark Examining Attorney has finally refused registration of
Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark, when used on or in connection with the identified
goods and services, is likely to cause confusion with the mark
for “jewelry, namely, gold, platinum, titanium and
silver jewelry; and gold, platinum, titanium and silver jewelry with precious stones,
namely, diamonds, rubies, emeralds, sapphires, and semi-precious colored stones
embedded therein, and pearls embedded therein” in International Class 14.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re

2 Registration No. 4254511 issued December 4, 2012. Color is not claimed as a feature of the
mark. The registration includes the following description of the mark: “The mark consists of
the words ‘PERFEKT BRILLIANCE’ represented in stylized cursive font wherein the word
‘PERFEKT’ appears in smaller size font than, and is located above, the word
‘BRILLIANCE’.”
Serial No. 86172969
- 4 -
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence. We find the others neutral.
A. Similarity of the Goods and Services, and Conditions of Purchase
We turn first to the du Pont factors of the relatedness of the goods and services,
and conditions of purchase. We base our evaluation on the goods and services as
they are identified in the application and registration, and we cannot read
limitations into the goods and services. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). Moreover, it is not necessary for the Examining
Attorney to prove likelihood of confusion with respect to each item of goods or
services identified in Applicant’s two-class application; if there is likelihood of
confusion with respect to any of Applicant’s identified goods or services, the refusal
of registration must be affirmed as to the entire class of goods or services. See
Serial No. 86172969
- 5 -
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981).
In this case, the “jewelry, namely, gold, platinum, titanium and silver jewelry”
identified in the cited registration encompasses, and therefore is legally identical to,
the “jewellery, rings, necklaces, pendants, earrings, charms, chains, bracelets,
brooches, bangles, baskets and cuff links of precious metal alloy and coated with
precious metal; Personal ornaments of precious metal; Trinkets in the nature of
jewellery[,]” and “Goods, namely, jewellery, rings, necklaces, pendants, earrings,
charms, chains, bracelets, brooches, bangles, baskets and cuff links of precious
metal alloy and coated with precious metal” identified in the application. Moreover,
the “[p]recious stones including diamonds, opals, pearls and coloured stones”
identified in the application are used in the “gold, platinum, titanium and silver
jewelry with precious stones, namely, diamonds, rubies, emeralds, sapphires, and
semi-precious colored stones embedded therein, and pearls embedded therein”
identified in the registration, and the jewelry accessories identified in the
application are inherently related to the jewelry identified in the registration. See
In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum,
211 USPQ 639, 640 (TTAB 1981)) (unrestricted and broad identifications are
presumed to encompass all goods of the type described).
In addition, Applicant’s services involve retail and wholesale jewelry stores as
well as distributorships in the field of jewelry and precious metals. It is well
established that goods and services may be related, especially where one mark is
Serial No. 86172969
- 6 -
used in connection with retail stores which sell the goods identified by another
mark. In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988)
(BIGGS for retail grocery and general merchandise store services likely to be
confused with BIGGS for furniture). Indeed in a case with facts similar to those
presented herein, this Board held that “[i]t is clear that consumers would be likely
to believe that jewelry on the one hand and retail stores selling jewelry on the other
emanate from or are sponsored by the same source if such goods and services are
sold under the same or similar marks.” In re Thomas, 79 USPQ2d 1021, 1023
(TTAB 2006) (citing Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ
863, 866 (TTAB 1985) (“there is little question that jewelry store services and
jewelry are highly related goods and services”); and In re Jewelmasters, Inc., 221
USPQ 90 (TTAB 1983)).
The evidentiary record in this case also supports a finding that jewelry and
retail jewelry stores are related. In addition to Applicant’s own identification of
goods and services, the Examining Attorney submitted with the November 21, 2014
Office Action screenshots of several jewelry stores (Zales, Jared, Mervis, Cartier,
and Cost21.com) that sell jewelry bearing their respective names.
Applicant does not dispute that the goods identified in the application and
registration include legally identical and otherwise inherently related items, or that
the services identified in the application are closely related to the goods identified in
the registration. However, Applicant contends, without support, that because the
goods associated with the respective marks are jewelry of precious metal and
Serial No. 86172969
- 7 -
precious stones, the products are expensive and consumers will exercise great care
in their purchases. There are several problems with this argument. First, not all of
the jewelry identified in the application is limited in material composition. As
stated above, we are bound by the identifications as written in the application and
cited registration, and cannot limit Applicant’s or Registrant’s goods – or their
channels of trade or classes of customers – to what any evidence may show them to
be. Stone Lion, 110 USPQ2d, at 1162 (“It was proper, however, for the Board to
focus on the application and registrations rather than on real-world conditions,
because ‘the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application.”); In re Dixie Rests.,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). In other words, because
there are no limitations in the identifications of goods, we must presume that both
Applicant and Registrant sell all types of jewelry, including expensive diamond
rings, as well as inexpensive silver bracelets, necklaces and rings, to all types of
purchasers. In this regard, we note that the screenshot from Cost21.com
demonstrates that the goods identified in the application and cited registration
cover certain silver rings, earrings, bracelets, and necklaces, some of which have
precious stones, that cost less than $10.00.3
Moreover, even if purchasers of certain types of jewelry are discriminating, that
does not necessarily mean that they are immune from source confusion because as

3 Attached to November 21, 2014 Office Action.
Serial No. 86172969
- 8 -
discussed above, the goods are identical and otherwise inherently related (as are the
goods and services) and, as discussed below, the marks are similar. Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1695 (Fed. Cir. 2005); In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Further, the purchasers of at least inexpensive and some costume jewelry are
ordinary consumers who would exercise only a normal degree of care in purchasing
jewelry, and who are likely to purchase jewelry on impulse, thereby increasing the
risk of confusion. See Thomas, 79 USPQ2d at 1024 (“the purchasers of at least
costume items of jewelry are ordinary members of the general public. Considering
that this type of jewelry, as applicant points out, is relatively inexpensive, it is
therefore likely to be purchased casually and on impulse, thus increasing the risk of
confusion.”) (citing Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 775 F.2d 1144,
227 USPQ 541 (Fed. Cir. 1985)).
Based upon the identifications of goods and services and the evidence of record,
we find that consumers would believe that the goods identified in the registration
are identical and otherwise inherently related to the goods identified in the
application, that the goods identified in the registration are highly related to the
services identified in the application, that all of the goods and services may emanate
from a common source, and that the purchasing conditions add to the likelihood of
consumer confusion.
Serial No. 86172969
- 9 -
B. The Marks and the Number and Nature of Similar Marks in Use in
Connection With Similar Goods or Services
We next consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imps., 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d, 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). In this case, because the goods and services
at issue are jewelry including inexpensive jewelry and jewelry store services, the
average purchaser is an ordinary consumer.
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their
entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
Serial No. 86172969
- 10 -
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as our principle
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We also are mindful that “[w]hen marks
would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238,
73 USPQ2d 1350, 1354 (Fed. Cir. 2004) (where goods and services are highly
related, “the degree of similarity necessary to support a conclusion of likely
confusion declines.”).
Applicant argues that the differences in the marks in appearance and the
inclusion of the “house mark” “MICHAEL HILL” in Applicant’s mark are sufficient
to distinguish them, and that the marks create different commercial impressions.
The Examining Attorney focuses on the visual, aural, and connotative similarities
between the wording PERFEKT BRILLIANCE in Registrant’s mark, and the
wording PERFECT BRILLIANCE, which he contends is the most distinctive
portion, and therefore the strongest source identifying element, of Applicant’s mark.
Although the marks are not identical, they are similar in that the term
PERFECT BRILLIANCE in Applicant’s mark is phonetically equivalent to the
Serial No. 86172969
- 11 -
entirety of Registrant’s mark PERFEKT BRILLIANCE. See Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (“the word portion of
applicant’s mark ‘SEYCOS’, is virtually the phonetic equivalent of opposer’s
‘SEIKO’ mark and is, in fact, the phonetic equivalent of the plural of opposer’s
mark”). In certain circumstances, similarity in sound alone may be sufficient to find
the marks confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581,
1586 (TTAB 2007); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
Moreover, the wording PERFEKT BRILLIANCE and PERFECT BRILLIANCE
engender the identical connotation of the best or most pure form of brilliance. The
Examining Attorney submitted a screenshot from the EGL USA Gemological
Laboratory glossary of gemological terms to show that the word “brilliance”
identifies a characteristic used to grade diamonds and other precious stones.4 Thus,
“perfect’ brilliance” suggests a highly desirable characteristic of diamonds and other
gemstones. The slight misspelling of the first term in Registrant’s mark does not
affect the mark’s commercial impression in any significant way. See, e.g., Contour
Chair-Lounge Co. v. Englander Co., 324 F.2d 186, 139 USPQ 285, 288 (CCPA 1963)
(“Contur” but a slight misspelling of “Contour,” with identical pronunciation and
meaning); Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962)
(TINTZ merely a phonetic spelling of “tints”).
The addition to Applicant’s mark of the highly descriptive words IDEAL CUT
and PRINCESS, which have been disclaimed, is not sufficient to distinguish the

4 Attached to November 21, 2014 Office Action.
Serial No. 86172969
- 12 -
marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting Nat’l Data, 224 USPQ at 752); In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). We recognize that
Applicant also has disclaimed the word BRILLIANCE.5 However, because the words
PERFECT BRILLIANCE are displayed in the same font, next to each other, and on
a separate line from the other elements in Applicant’s mark, we do not give more
weight to the non-disclaimed word PERFECT, as Applicant suggests,6 and instead
consider the terms together.
With regard to the design element in Applicant’s mark, in general, words
dominate over a design element in a mark because consumers use the wording to
call for the goods and services. Viterra, 101 USPQ2d at 1911 (quoting CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). We find that to be
true here, where the design element, an abstract depiction of a starburst resembling
a diamond or other gemstone, suggests the jewelry, precious stones, and jewelry
stores with which it is used. Further, the stylization in Registrant’s mark is
minimal and does not serve to meaningfully distinguish the marks.

5 Registrant has not disclaimed either term in its mark.
6 7 TTABVUE 10.
Serial No. 86172969
- 13 -
As to the additional literal matter in Applicant’s mark, MICHAEL HILL, we find
that in considering the mark as a whole, consumers would view MICHAEL HILL as
a brand reference, and PERFECT BRILLIANCE, which appears in the same font
and shading as MICHAEL HILL, as an accompanying tagline or slogan. As a
general rule, the addition of a house mark or other such matter to one of two
otherwise confusingly similar marks will not serve to avoid a likelihood of confusion.
See, generally, In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (GLUE
STIC for general purpose adhesive in stick form likely to be confused with UHU
GLU STIC for adhesives for paper and stationary); Key West Fragrance & Cosmetic
Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN SAVERS
for hand and body lotion confusingly similar to SKIN SAVERS for face and throat
lotion). Indeed, “such addition may actually be an aggravation of the likelihood of
confusion as opposed to an aid in distinguishing the marks so as to avoid source
confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations
omitted) (finding LE CACHET DE DIOR confusingly similar to CACHET). See also
In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972)
(stating that addition of a trade name will make consumers think that products
have a common origin or that the companies merged); Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying principle that “the addition
of a trade name or house mark or other such matter to one of two otherwise similar
marks will not serve to avoid a likelihood of confusion.”).
Serial No. 86172969
- 14 -
We recognize, however, that there are exceptions to this general principle. For
example, the additional matter may be sufficient to distinguish the mark in
situations where the appropriated matter is highly suggestive or merely descriptive
of the identified goods or services. It is Applicant's position that these exceptions are
applicable here. According to Applicant, “the only matter common to the marks is
not likely to be perceived by purchasers as distinguishing source because it is
merely descriptive or diluted. Indeed, the Examining Attorney admits that the only
overlapping term PERFECT BRILLIANCE is at best suggestive. The term
PERFECT BRILLIANCE (or PERFEKT BRILLIANCE) is incredibly weak,
suggestive or even descriptive, and entitled to little if any independent protection.”7
In support of its position, Applicant has presented 20 (of a stated total of 85)
active third-party registered marks that include the word PERFECT or
BRILLIANCE for use with jewelry or related retail or wholesale services.8 However,
none of the third-party marks includes both PERFECT and BRILLIANCE, much
less together in a single term, and therefore none is as close in sound, appearance,
meaning and commercial impression to the cited registered mark as is Applicant’s
applied-for mark. Moreover, even if each of the words commonly is used in the field
of jewelry, the evidence does not demonstrate that the combined wording PERFECT

7 10 TTABVUE 4. Because the cited mark is registered on the Principal Register, it is
entitled to the presumptions accorded to such a registration, including that the registration
is “prima facie evidence of the validity of the registered mark.” See Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b). Therefore, to the extent that Applicant intended this
argument to be an attack on the validity of the registration, we have given the argument no
consideration. Rather, we regard Applicant’s position to be that Registrant’s mark is highly
suggestive, and therefore deserves a limited scope of protection.
8 Attached to May 8, 2015 Request for Reconsideration.
Serial No. 86172969
- 15 -
BRILLIANCE is diluted in use or commercially weak for jewelry, precious stones, or
related retail or wholesale services. Cf., Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671 (Fed. Cir. 2015).
Based on the record, we are not persuaded that the wording PERFECT
BRILLIANCE possesses the degree of suggestiveness or significance in relation to
jewelry, precious stones, and jewelry stores such that Applicant’s addition of the
“house mark” MICHAEL HILL, albeit appearing first, suffices for purposes of
outweighing this similarity and distinguishing the two marks. There is no question
that the word BRILLIANCE alone is descriptive of the identified goods, and that
the word PERFECT is a laudatory term; however, the evidence does not lead us to
conclude that the term PERFECT or the combined wording PERFECT
BRILLIANCE is so highly suggestive of jewelry, precious stones, and jewelry stores
or has been adopted by so many (or any) third-parties such that the cited
registration is entitled to such a narrower scope of protection that Applicant’s mark
is entitled to registration for identical goods.
Because the term PERFEKT BRILLIANCE comprises Registrant’s entire
distinctive mark and the phonetically equivalent term PERFECT BRILLIANCE
forms a significant portion of Applicant’s mark, we find the marks as a whole are
more similar than dissimilar in appearance, sound, connotation and commercial
impression. Contrary to Applicant’s contention, the addition of MICHAEL HILL to
Serial No. 86172969
- 16 -
Applicant’s mark does not significantly alter the commercial impression of the
mark. That is, purchasers familiar with Registrant's mark PERFEKT
BRILLIANCE as used on the identified jewelry, are likely to assume that the house
mark MICHAEL HILL simply identifies what had previously been an anonymous
source for those goods, see In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB
2007) (“When, as in this case, the common part of the marks is identical, purchasers
familiar with the registrant's mark are likely to assume that the house mark simply
identifies what had previously been an anonymous source.”), and that Applicant’s
mark is a variant mark identifying a new line of jewelry, precious stones, and
jewelry stores. See In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (“Richard Petty’s
Accu Tune” for automotive service centers specializing in engine tune-ups and oil
changes likely to cause confusion with “Accutune” automotive testing equipment).
Applicant also relies on cases from the Second, Fourth and Sixth Circuit and one
case from the Eastern District of Kentucky to support its argument that the use of a
company name may obviate confusion. Those cases present different facts from the
facts before us, in large part because they are actions for infringement, false
designation of origin and/or unfair competition, and they include evidence of how
the marks are actually used in commerce. As discussed at length above, there is no
per se rule concerning whether the addition of a trade name or house mark (e.g.,
MICHAEL HILL) would or would not be sufficient to differentiate the marks from
the common elements of the marks (e.g., PERFECT BRILLIANCE and PERFEKT
Serial No. 86172969
- 17 -
BRILLIANCE). New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817,
819 (CCPA 1975).
Viewing the marks in their entireties, we find that the similarities between the
marks in sound, appearance, meaning and commercial impression outweigh the
dissimilarities. We further find that the number and nature of similar marks in use
in connection with similar goods or services is neutral.
II. Conclusion
After considering all of the evidence properly of record, including any evidence
not specifically discussed herein, and arguments pertaining to the du Pont
likelihood of confusion factors, we conclude that prospective purchasers familiar
with the registered mark for “jewelry, namely, gold, platinum,
titanium and silver jewelry; and gold, platinum, titanium and silver jewelry with
precious stones, namely, diamonds, rubies, emeralds, sapphires, and semi-precious
colored stones embedded therein, and pearls embedded therein” would be likely to
believe, upon encountering Applicant’s mark including virtually the same term (and
other non-distinctive and non-distinguishing matter) for identical and
otherwise complementary jewelry, precious stones, and accessories, and related
retail, wholesale and distributorships in the field of jewelry and accessories, that
such goods and services emanate from, or are sponsored by or affiliated with the
same source.
Serial No. 86172969
- 18 -
Decision: The refusal to register Applicant’s mark is affirmed.